Ex Parte Sugita - Page 5

         Appeal No. 2004-0949                                                       
         Application No. 09/528,986                                                 


         reference.  Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d                
         628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).                            
              Here, the examiner does not explain how each and every                
         element recited in claim 1 is disclosed by Wakabe.  In                     
         particular, if charge-discharge lead 102 corresponds to                    
         appellant’s claimed thin film, and if cutting device 103                   
         corresponds to the claimed shielding member, the examiner does             
         not explain what component in Wakabe is the closure cap.  Also,            
         once the thin film 102 is punctured, cutting device 103 is no              
         longer located between the thin film and the generator element.            
         Hence, the examiner has not met his burden. Id.  The examiner’s            
         obviousness rejection fails to explain how modification of                 
         Wakabe (regarding the above-mentioned deficiencies) would have             
         been obvious.                                                              
              In view of the above, we therefore reverse the anticipation           
         and obviousness rejections of claims 1-8 over Wakabe.                      

         II. The Obviousness Rejection over Matsushita                              
              We refer to pages 4-5 and 7 of the answer regarding the               
         examiner’s position for this rejection.  We observe that the               
         examiner states that Matsushita does not teach “a cover hole to            
         be covered with a thin film”.  Yet, the examiner states that               
         “[i]t would be obvious to one skilled in the art at the time the           
         invention was made to include a shielding member for preventing            
         the liquid electrolyte of a battery from exiting the cell or               
         coming into contact . . .”.  Answer, pages 4-5.  Hence, the                
         examiner recognizes a deficiency found in Matsushita (a cover              
         hole to be covered with a thin film).  Yet, the examiner does              
         not explain how this deficiency is made obvious; rather, the               

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